A trademark is an excellent way to protect your business’s intellectual property.

Trademarks set your product or service apart from others and can take several forms, including words, phrases, letters, numbers, logos, pictures, distinctive packaging, or signage, sounds or jingles.

Some famous trademarks include the McDonald’s “golden arches”, the Nike “swoosh” symbol, and the Apple logo.

In Australia, trademarks can either be registered or unregistered. 

The type of trademark you hold, registered or unregistered, relates directly to the legal action you could take if someone illegally uses your trademark.

If you have registered your trademark, the legal remedy for infringement is trademark infringement under the Trade Marks Act; if you have not registered your trademark, the legal remedy for infringement is common law passing off.

Passing off occurs when someone without a registered trademark finds that another business is passing off their brand as their own.

There are three critical things you will need to show to prove a passing-off claim: 

1. Misrepresentation:

The infringer must misrepresent your brand in a way that will likely deceive customers. You will need to show similarities between the two.

2. Reputation:

Your brand must have a reputation in the same geographical area. For example, an international company that is not known in Australia would have difficulty proving passing off. To demonstrate your business’ reputation, you will need to provide evidence such as company records or financial statements.

3. Damage:

Your brand must suffer damage to prove passing off successfully. This damage will need to be to your reputation. To prove damage to your reputation, you will need to either show that the opinion of your brand has been tarnished or that you have lost revenue.

Trademark infringement is something that only registered trademark owners have access to when it comes to legal action. Under the law, trademark infringement protects against all illegal use of your registered trademark.

A trademark infringement happens when: 

  1. There is a registered trademark.
  2. There is an infringing trademark that is “substantially identical or deceptively similar” to your registered trademark.
  3. The infringing trademark is on an identical or similar product/service as your registered trademark.

What can you do? If you think someone is using your trademarks – either registered, or unregistered – your first step is to get legal advice. 

Remember, if you have a registered trademark, the legal action against the infringer is trademark infringement. However, if you have an unregistered trademark, the legal action against the infringer is passing off. 

GLG Legal can help you protect your business’ intellectual property. Contact our office on (07) 3288 3511 for an appointment with our corporate law experts.